Tag Archives: Trademark Law

The USPTO recently released its Performance and Accountability Report for Fiscal Year 2010. The Report provides a summary of program and financial results to assess the USPTO’s performance. This article will summarize some of the statistics that were provided in the Report.

At the end of fiscal year 2010, the USPTO work force included 9,507 federal employees. Of those 9,507 employees, 6,225 were patent examiners and 378 were trademark examining attorneys.

The Report provided statistics on the target and actual number of months from fiscal year 2006 to fiscal year 2010 for (1) Patent Average First Action Pendency, which measured the average time in months from filing until an examiner’s initial determination on the patentability of an invention; and (2) Patent Average Total Pendency, which measured the average time in months from filing until the application is issued as a patent or abandoned by the applicant.
(1) Patent Average First Action Pendency (in months)
Fiscal Year – Target – Actual
2006 – 22.0 – 22.6
2007 – 23.7 – 25.3
2008 – 26.9 – 25.6
2009 – 27.5 – 25.8
2010 – 25.4 – 25.7

Similarly, the Report provided information on the target and actual number of months from fiscal year 2006 to fiscal year 2010 for: (1) Trademark Average First Action Pendency, which measured the number of months from the date of application filing to the first office action; and (2) Trademark Average Total Pendency, which measured the average number of months from date of filing to notice of abandonment (unless a notice of allowance was issued), notice of allowance, or registration for applications based on use in that month.
(1) Trademark Average First Action Pendency (in months)
Fiscal Year – Target – Actual
2006 – 5.3 – 4.8
2007 – 3.7 – 2.9
2008 – 2.5 to 3.5 – 3.0
2009 – 2.5 to 3.5 – 2.7
2010 – 2.5 to 3.5 – 3.0

* The average total pendency including suspended and inter partes cases was 13 months. Excluding applications that were suspended or delayed for inter partes proceedings, the average total pendency was 10.5 months. The above 2010 trademark targets were met.

The number of trademark applications filed electronically has also continued to increase:

On December 31, 2009, Eat’n Park, a restaurant group with its principal place of business in Pittsburgh, filed suit against Crumb Corps, a Texas corporation, for trademark infringement, trademark dilution, and unfair competition.

The complaint alleges that Crumb Corps sells “Smiley Faces” cookies which have a design that is confusingly similar to the registered trademark of Eat’n Park and are directly competitive products to the Eat’n Park SMILEY face cookies. Crumb Corps’s cookies are available via retail stores, catalogs, and online. Eat’n Park alleges that Crumb Corp’s sale of cookies using its smiling face design and the SMILEY word mark constitutes unfair competition.

The October 26, 2009 Federal Register published a final rule effective December 28, 2009 that includes changes to Trademark Rules of Practice (37 CFR Part 2). The changes are in: (1) Requirements for Signature of Documents, (2) Recognition of Representatives, and (3) Establishing and Changing the Correspondence Address.

The purpose is to “codify and clarify current practice.” The Office “reworded and/or reorganized the rules for clarity, and added headings to facilitate navigation through the rules.”

The changes include:

1. Section 2.17(d) is amended to provide that the owner of an application or registration may appoint an attorney through the Trademark Electronic Application System (“TEAS”) for up to twenty applications or registrations per TEAS form that have the identical owner or attorney (consistent with TMEP § 602.01(a));

2. Section 2.17(g)(1) is added to provide that the Office considers a power of attorney to end with respect to a pending application when the mark is registered, when the ownership changes, or when the application is abandoned (consistent with TMEP § 601.01);

3. Section 2.18(b)(2) is added to provide that a request to change the correspondence address must be made in writing, signed by the applicant, registrant, or party to a proceeding, someone with legal authority to bind the applicant, registrant, or party, or a qualified practitioner, in accordance with § 2.193(e)(9) (consistent with TMEP §§ 603.02 and 603.02(a));

4. Section 2.19(a) is revised to clarify the requirements for revocation of a power of attorney; and

5. Section 2.19(b) is revised to set forth the requirements for filing a request to withdraw as attorney.

On October 5, 2009, in a 4-3 decision, the Pennsylvania Supreme Court held that the Trademark Counterfeiting Statute,18 Pa.C.S. § 4119, is unconstitutionally overbroad.

The Trademark Counterfeiting Statute provides:

(a) Offense defined.– Any person who knowingly manufactures, uses,
displays, advertises, distributes, offers for sale, sells or possesses with intent
to sell or distribute any items or services bearing or identified by a counterfeit
mark shall be guilty of the crime of trademark counterfeiting.

* * * * *
(i) Definitions.– As used in this section, the following words and phrases shall
have the meanings given to them in this subsection:

“Counterfeit mark.” Any of the following:
(1) Any unauthorized reproduction or copy of intellectual
property.

(2) Intellectual property affixed to any item knowingly sold,
offered for sale, manufactured or distributed or identifying
services offered or rendered, without the authority of the owner
of the intellectual property.

“Intellectual property.” Any trademark, service mark, trade name,
label, term, device, design or word adopted or used by a person to
identify that person’s goods or services.

18 Pa.C.S. § 4119.

A statute is unconstitutionally overbroad only if the statute criminalizes a substantial amount of constitutionally protected speech.

The Commonwealth argued that the Trademark Counterfeiting Statute is not unconstitutionally overbroad because it is limited to persons with the intent to sell or distribute items with counterfeit trademarks and thus does not reach a substantial amount of constitutionally protected speech. The Commonwealth also relied on a proposed amendment to the statute, statutes from sister states, and the mens rea in the Crimes Code.

The Supreme Court held that under the definition of “intellectual property” any use of a “term” or “word” that is “engaged by another person to identify that person’s goods or services is a ‘counterfeit mark’” which is unconstitutionally overbroad.

Franchise arrangements often involve a variety of intellectual property rights. Disputes can arise when a franchisee’s license ends, but the franchisee continues to sell a product associated with the franchise or the franchisee continues to display the franchise’s signage.

On September 22, 2009, Chevron Intellectual Property LLC and Chevron U.S.A. Inc. (“Chevron”) filed two separate trademark infringement and unfair competition lawsuits in the United States District Court for the Western District of Pennsylvania against defendants who allegedly owned and operated automobile gasoline and service stations with infringing signage and materials (2:09-cv-01292-AJS and 2:09-cv-01293-TFM).

Chevron owns over twenty trademarks and service marks including trademarks for TEXACO, Star T Design, Service Station Canopy Design, Gasoline Pump Design, and a Building Design for automobile services. There are over 1,500 TEXACO-branded stations currently licensed to use such marks.

Chevron’s authorized TEXACO-branded stations sell TEXACO brand gasoline. Licensed TEXACO-branded service station facilities are authorized to use and prominently display exterior and interior signage that bear Chevron’s registered TEXACO and Star T Design trademarks. Buildings of licensed TEXACO-branded facilities also often have an exterior appearance consisting of: (1) a red and black building in combination with silver and dark gray, with the Star T Design mark; and (2) a rigid canopy over the gas pumps with a black background and a red border, including the TEXACO and Star T Design marks on the side of the canopy.

For a period of time from 2001 to 2006, Chevron licensed the use of the TEXACO marks through Shell Oil Company and other related companies. Chevron claims that the defendants once operated as a licensed TEXACO-branded service station and sold TEXACO brand gasoline and other products. By June 30, 2006 defendants were no longer selling or supplying TEXACO brand gasoline and were no longer authorized licensees of Chevron. At that time, defendants were obligated to remove the TEXACO marks from their facilities, but defendants still have not. Chevron alleges that while defendants’ facilities are presently not operational, defendants displayed and used the infringing signage after June 30, 2006 and defendants continue to display signage on the premises.

The use of a third party’s trademark on social networking sites such as Twitter and Facebook has recently been a topic of interest for trademark owners.

Twitter
On September 15, 2009, ONEOK, Inc., a publicly traded Fortune 500 company in the energy industry, filed suit against Twitter, Inc. for trademark infringement and contributory infringement of ONEOK’s registered trademarks in the District Court for the Northern District of Oklahoma.

ONEOK is the owner of U.S. Trademark Registration Number 2,985,073 for the word mark “ONEOK” and a Diamond design. ONEOK is also the owner of U.S. Trademark Registration Number 3,655,886 for a Diamond design. In the Complaint, ONEOK alleges the following:
1. Twitter has assigned the user name “ONEOK” to a party other than ONEOK, Inc.;
2. The current ONEOK Twitter account holder has generated Tweets on at least two occasions containing information regarding ONEOK, Inc., the ONEOK trademark name and the Diamond design;
3. The Tweets have the appearance of being an official statement issued by ONEOK and have been passed off to unsuspecting recipients as official statements by ONEOK on Twitter;
4. Twitter has provided the means by which the Twitter account holder generated the postings; and
5. Twitter has refused to transfer control of the ONEOK Twitter account to ONEOK, Inc.

ONEOK claims that if the situation is allowed to persist, it will cause irreparable damage to ONEOK’s reputation in the investor community and in the energy industry.

Twitter’s current Terms of Use do not provide a means for submitting a notice of trademark infringement. The Terms only provide a means for submitting a notice of copyright infringement.

Facebook
On June 13, 2009, Facebook allowed users to personalize a Facebook URL by selecting a unique “username” (www.facebook.com/username) which could include a trademark, brand name, or personal name. Companies could protect their registered trademark from a potential infringer registering their trademark as a username by filing out a “Preventing the Registration of a Username” form. The trademark owner was required to provide their trademark and registration number on the form.

Facebook’s current Terms of Use provide a means for submitting a notice of copyright infringement and non-copyright intellectual property infringement. Facebook allows users to provide a “Notice of Intellectual Property Infringement” by filling out an “automated IP infringement form” online if the user believes their non-copyright intellectual property rights are being infringed.

Ride The Ducks is an amphibious tour operator with duck boat tours in Branson, Philadelphia, San Francisco, Seattle, Stone Mountain Park, GA and Newport, KY. On May 19, 2009, Ride The Ducks filed suit against Bay Quackers in federal court in the Northern District of California alleging infringement of a sound mark.

Bay Quackers is a San Francisco amphibious tour operator. During tours, guests “quack” like a duck using a kazoo. The suit alleges that Bay Quackers’ kazoos emit a quacking sound that is identical to a registered sound mark of Ride The Ducks, U.S. registration number 2484276, which “consists of a quacking noise made by tour guides and tour participants by use of duck call devices throughout various portions of the tours.”

A sound mark, which is a type of trademark, identifies and distinguishes a product or service through audio means. Examples of sound marks include: (1) a series of tones or musical notes, with or without words; and (2) wording accompanied by music. TMEP § 1202.15. An individual or company may try to protect their sound mark by filing an application for registration with the United States Patent and Trademark Office electronically.

Ride The Ducks has sought a preliminary injunction against Bay Quackers to stop using the kazoos and to have its inventory of the kazoos destroyed.

Just Ducky Tours is a popular attraction in Pittsburgh that is similar to Ride The Ducks and Bay Quackers. Just Ducky Tours offers an amphibious tour that travels on land and in one of Pittsburgh’s three rivers during the months of April through October and on weekends in November.